Transportation and Trademarks: General Rules for Use in Commerce

Date: April 07, 2013

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For local business owners, what do trademark registration and transportation have in common? In short, everything. It is a little known fact amongst the general population, but federal trademark law finds its roots within the U.S. Constitution. To be exact, the authority of the U.S. Patent and Trademark Office (USPTO) to grant federal trademark registration derives from the Commerce Clause of the Constitution. What this means is that before the federal government has the authority to register a trademark through the USPTO, that trademark must be in use in commerce across state lines, between states, or between a state and a foreign country.

With that said, it appears that an applicant cannot be selling goods or services to customers solely residing within their own state. Customers must be interstate, by residing in other U.S. states, U.S.territories (Guam, Puerto Rico, etc.), or with customers in foreign countries (Canada, China, England, etc.). Having this definition in such broad terms still leaves much room for debate on how applicants can properly sell to customers of other states or countries. The good news here is that the Courts have provided guidance on business conduct situations that allow an applicant to acquire a trademark registration, based on how and where an applicant actually conducts business with their customers.

Acceptable SituationsThe most obvious and well known of the allowable situations is when one has a business location bearing their trademark in more than one U.S. state, or one location within the United States and others in foreign countries. Chains of department stores, grocery marts, and restaurants all exemplify this type of conduct. Another obvious situation is when a registrant has a single central location, but transports their marked goods across state lines and to customers residing outside of the state of that central location. Selling and shipping goods through a mail order catalog service or over the Internet constitutes conduct. To follow along this line of thought, providing services across state lines and advertising for such services is also sufficient to establish interstate commerce when trademarks are attached to those services. Each of the above is a textbook case of interstate commerce. Unfortunately, these examples are often mistaken as the only conduct an applicant can partake in to be granted trademark registration, which is simply untrue.

Court CasesThere have been many other lesserknown situations where Courts have found one’s business conduct acceptable. In one such case, an owner of a pool hall was found to have interstate commerce because it advertised in multiple states. The Court found that interstate advertising gave the USPTO authority to grant federal trademark registration. See U.S. Shoe Corp. v. J. Riggs West, Inc., 221 USPQ 1020, 1022 (TTAB 1984).

In another situation, which could apply to business locations found on upper Peach Street in Erie, it was found that a single automotive service station had been operating in interstate commerce. The Court reasoned that since the station’s location was near federal interstate highways, it was possible for out-of-state residents to transport themselves and their automobiles across state lines to have work done. See In re Gastown, Inc., 140 USPQ 216 (C.C.P.A. 1964).

There are many other examples where Courts have found local business owners to be conducting business in interstate commerce. But the real takeaway here is that a proper finding of interstate commerce is easily achieved, even by local businesses that apparently don’t operate across state lines. So, if you are a local business owner considering federal trademark registration, you don’t have very far to look to prove your customers or goods are transporting across state lines.

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